IN THE CANADIAN PATENT OFFICE
DECISION OF THE COMMISSIONER OF PATENTS
Patent application 582,219 having been rejected under Subsection
47(2) of the Patent Rules the applicant has asked that the Final
Action of the Examiner be reviewed. The rejection has
consequently been considered by the Patent Appeal Board and by
the Commissioner of Patents. The findings of the Board and the
ruling of the Commissioner are as follows:
Agent for the Applicant
Fetherstonhaugh & Co.,
P.O. Box 2999, Station D,
55 Metcalfe Street, Suite 900,
Ottawa, Ontario,
K1P 5Y6
This decision deals with the Applicant's request that the
Commissioner of Patents review the Examiner's Final Action on
patent application 582,219, Class 154-143, filed November 4,
1988, entitled "Thermal Insulation Material as Insulating and
Sealing Layer for Roof Areas" and naming Herbert Prignitz as both
inventor and applicant. The Examiner in charge issued the Final
Action on October 28, 1992 refusing all claims in view of prior
art. The Applicant replied on April 28, 1993 with an argument in
favour of the rejected claims and requested that the Final Action
be reviewed by the Commissioner of Patents. The Applicant also
suggested that he would consider the possibility of amending the
claims by inserting one of the features of claims 9, 10 or 11
into claim 1 and at the suggestion of the Board an amended set of
claims 1 to 20 in which the feature of claim 10 was inserted into
claim 1 was submitted on November 30, 1993.
The invention relates to a thermal insulation material as
insulating and sealing layer for roof areas which makes it
possible to cover larger areas of several square meters at a time
and also avoid the disadvantages of the prior art solutions to
problems such as buckling, blistering or wrinkling. The invention
is illustrated by Figures 1 and 2 which are reproduced below:
(see formula I, II)
Figure 1 shows a section of the thermal insulation material
according to the invention in a view from below, whilst Figure 2
shows the thermal insulation material in a vertical section taken
in the direction of Line II-II in Figure 1. The insulation
material generally identified in Figure 1 as 10 comprises a sheet
or foil web 130 which acts as a sealing layer and is bonded to a
strip of thermal insulation material 120 which constitutes the
insulating material. The web 130 is provided with projecting
edges which serve as overlap sections 31 and 32 arranged on
longitudinal and transverse edges to provide a means of sealing
adjacent panels. The insulation material 120 is usually selected
from a polymer such as polyurethane or polystyrene but may also
be fabricated from glass fibre or rock wool strips. The
insulation panels also contain means providing for the removal of
any moisture that might accumulate between the insulating panels
and the roof surface to be covered. These means for removing any
moisture buildup take the form of flat prominences formed on the
insulating material 120 on the side facing away from sealing
layer 130.
In the Final Action the examiner rejected all of the claims in
view of United States patent number 3,455,076 issued July 15,
1969 to Clarvoe on the grounds that the subject matter covered by
the claims lacked inventive ingenuity over the cited reference.
Rejected claim 1 on which the other claims were dependent is as
follows:
1. An article of insulation positionable between a surface to
be covered and an external environment, said article comprising:
a layer of sealing material having a given area defined by a
longitudinal and a transverse edge;
an insulation material having a first face facing toward
said layer of sealing material and a second face facing oppositely
thereof, said insulation material being sized and disposed on said
layer of sealing material such that portions of its given area are
exposed so as to define at least two overlap sections; and
means provided on said insulation material second face for
forming diffusion channels on said insulation material second face
for drawing off humidity from between said second face and said
surface to be covered.
The Clarvoe patent relates to roofing membranes comprised of an
outer weathering film and a laminated resilient sponge layer
which protects against roof membrane failure by its ability to
take up stresses caused by building movement. The resilient
sponge backing can be grooved to further increase its ability to
take up stress and to provide an outlet for trapped water vapour.
A reinforcing fabric may also be provided between the outer
weathering film and the sponge layer. The invention is
illustrated by Figures 1 to 7 which are reproduced below:
(see formula I, II)
(see formula I, II, III, IV, V)
Referring to Figures 1 and 2 the roofing material is indicated
generally at 10 and comprises a film 12 adhered to a
compressible, recoverable, resilient material 14. The film or
layer 12 is not limited to any particular material but is of an
elastic and highly durable nature being waterproof and capable of
withstanding the rigors of weathering, suitable materials being
selected from, for example, polyisobutylene, butyl rubber or
neoprene. Material 14 is selected from a material which is
capable of being distorted to a considerably greater degree than
film 12, suitable materials being selected from, for example,
sponge rubber, sponge polyurethane foam or sponge polystyrene
foam. The dimensions of the film and underlying layer are
preferably 20 to 80 mils for film 12 and 1/16 to 1/4 inch thick
for sponge layer 14 so that the material can be kept lightweight
and flexible enough that it can packaged in roll form. In order
to provide the laminate with more body and also to preclude the
adhesive used to bond the laminate to the roof deck from
attacking film 12 a third layer of material may be interposed
between the film and sponge layers as shown in Figure 6 at 34.
The third layer of material can be a felted material comprised of
organic or inorganic fibres such as cellulosic, mineral wool,
asbestos or glass fibres.
To provide for the removal of water vapour or air which may
become trapped between the roof deck and the roofing membrane
sponge layer 14 may be provided with a plurality of intersecting
grooves shown as 20 and 22 in Figures 5 and 7. These grooves say
extend through the full thickness of the sponge layer as shown in
Figures 5 and 7 or may extend through only part of the sponge
layer. The result is to provide a roofing material which is
flexible, waterproof, easy to apply and has some insulation
value.
In his Final Action the examiner rejected the claims of the
application on the grounds that the Clarvoe reference teaches all
of the features of the Applicant's invention, namely a roofing
membrane that is easy to apply, is waterproof and has insulating
properties. In the Final Action it is stated that:
"In applicant's response of September 10, 1992 arguments are
presented against the rejection of the present claims in view of
the reference applied. The thrust of the arguments is that the
construction of the Clarvoe (patent) does not provide both
insulation and sealing. Applicant supports this premise by
indicating: 1) the dimensions in those specific teachings of
Clarvoe would fail to provide insulative and sealing properties;
and 2) further stating that no suitable material existed at the
time of Clarvoe's teaching which would provide these properties.
These arguments fail to dissuade the rejection. Clarvoe teaches
"The dimensions of the film and underlying layer may vary
according to the desired properties of the laminate and according
to available manufacturing capabilities." (column 2 lines 50 to
53.
Clarvoe also teaches, "With this arrangement, the film provides a
tough, weather resistant surface, and the sponge layer provides
insulation." (column 2 lines 65 to 67.
Clearly, then, Clarvoe does teach a construction that seals and
insulates. Further Clarvoe teaches examples of materials that may
be used for each layer. Applicant is directed to column 2 lines 33
to 40. Included in these examples are polyurethane and polystyrene
foams.
Consequently claims 1 to 23 are rejected because the subject
matter thereof lacks inventive ingenuity in view of G.W. Clarvoe,
as the difference thereover is held to be obvious to one of
ordinary skill in the art to which the alleged invention
pertains."
In his reply to the Final Action the Applicant has indicated that
the claims of the application are directed to an article of
thermal insulation, whereas the invention of Clarvoe does not
relate to thermal insulation as that would be understood by a
person skilled in the art today. Thus it is stated that:
"The claims of the present application are directed to "an
article of insulation". It is clear from the disclosure, for
example the very first sentence, that the insulation referred to
is thermal insulation. In the construction trade, there are clear
standards which have to be addressed. There are regulations which
define minimum thermal insulation. In the construction industry,
thermal insulation is normally considered to begin at a thickness
of 40 millimetres.".......
.......
"The Examiner has rejected the claims on the basis of the
single reference, United States patent No. 3,455,076 (Clarvoe).
This reference does not relate to thermal insulation as that would
be understood by a person skilled in the art today. It relates to
roofing materials, but is clearly concerned with providing a
material which can accommodate roof deck movement. The reference
requires "a layer of highly compressible and resilient spongy
material capable of being distorted to a considerably greater
degree than the film" in which "the film" is the weather resistant
outer layer of the roofing material. This "highly compressible and
resilient spongy material" is essential to the teachings of
Clarvoe. It happens that this spongy layer also provides
insulation. However, applicant submits that no person skilled in
the art, reading Clarvoe, would be confused that this provision of
insulation refers to proper thermal insulation as that term would
be understood in today's construction world. Indeed, at column
two, line 54, Clarvoe states that the so-called insulation layer
is preferred to be about 1/16 to 1/4 inches thick. This gives a
range of 1,5 to 6 millimetres thickness. This is the range which
Clarvoe teaches is the preferred thickness of the layer. Any
person skilled in this art would consider a layer of from 1.5 to 6
millimetres as totally inadequate for the purposes of thermal
insulation.".....
.....
Further the present claims require "means provided on said
insulation material second face for forming diffusion channels on
said insulation for drawing off humidity from between said second
face and said surface to be covered". These means are exemplified
by one of the preferred embodiments shown in figure 2 as
projections 21. Whilst Clarvoe does teach means to permit the
escape of air or water vapour trapped between the roof deck and
the roofing, these means are clearly channels or grooves between
adjacent strips of the spongy or resilient material. These
channels cannot be regarded as means on the second face, as
required by applicant's claims. There is nothing in Clarvoe which
could be considered as "means provided on said insulation material
as required by applicants present claim."
Whilst it agrees with the Applicant that its insulation material
is patentably distinct from that disclosed by the Clarvoe
reference the Board nevertheless agrees with the examiner that
rejected claim 1 does not make that distinction sufficiently
clear. Thus the Board agrees that the Clarvoe material would be
of little practical use for the purposes of thermal insulation,
since the foam materials used as components of the roofing panel
do not in general have high insulation values, would in any case
be too thin to be effective and would have their insulating
properties further degraded by having slots cut either partially
or completely through them. However the statement in claim 1 that
the applicant's article of insulation comprises "means provided
on said insulation material second face for forming diffusion
channels on said insulation material second face for drawing off
humidity from between said second face and said surface to be
covered" does not in the Board's opinion patentably distinguish
applicant's invention from Clarvoe in that the means described in
Clarvoe, i.e. slots cut in the sponge layer, can also strictly
speaking be regarded as being on the insulation material.
The Board however does consider that amended claim 1 which is as
follows:
"An article of insulation positionable between a surface to
be covered and an external environment, said article comprising:
a layer of sealing material having a given area defined by a
longitudinal and a transverse edge,
an insulation material having a first face facing toward
said layer of sealing material and a second face facing oppositely
thereof, said insulation material being sized and disposed on said
layer of sealing material such that portions of its given area are
exposed so as to define at least two overlap sections; and
means provided on said insulation material second face for
forming diffusion channels on said insulation material second face
for drawing off humidity from between said second face and said
surface to be covered wherein said means for forming diffusing
channels in said insulation material includes a plurality of
projections in regular disposition on said face facing away from
said layer of sealing material."
does patentably distinguish Applicant's insulation material from
that of Clarvoe in that it clearly indicates that the channels in
the insulation material are formed from projections on the
insulating material itself rather than from channels cut into the
material. The Board therefore recommends that present claims 1 to
23 of the application be replaced by new claims 1 to 20 and that
the application be returned to the examiner for further
prosecution consistent with the recommendation.
P.J. Davies M. Howarth
Acting Chairman Member
Patent Appeal Board Patent Appeal Board
I concur with the recommendation of the Patent Appeal Board.
Accordingly I agree that present claims 1 to 23 of the
application be replaced by new claims 1 to 20 and that the
application be returned to the examiner for further prosecution
consistent with the recommendation.
M. Leesti
Commissioner of Patents
Dated at Hull, Quebec
this 21st day of January 1994